UK: UK Trademark Rule Changes To Affect EU Trademark Owners


The United Kingdom Intellectual Property Office ("UK IPO") has recently announced changes to its trademark examination procedures that will affect those having registered trademark rights not only at the national level in the United Kingdom but also under the EU-wide Community Trade Mark ("CTM") system. The changes relate to the process by which the UK IPO finds and responds to potential conflicts between new UK trademark applications and prior trademarks in the United Kingdom or CTM registers. Although the changes apply directly only to those who have filed national applications in the United Kingdom, the repercussions of the changes will have a significant effect on a much larger population of trademark owners – namely those who hold CTM registrations. Holders of UK and CTM registrations should take note of these effects and act accordingly to protect their rights.

The UK Trademark Examination Process

The UK IPO follows certain procedures in examining newly filed applications for registration of a trademark in the United Kingdom. As in many other countries, the UK IPO has historically included as part of its examination procedure a means for determining whether other previously filed trademark applications or registrations would present a conflict if a more recently filed trademark application were to be granted registration. Prior to the rule change taking effect on October 1, 2007, the UK IPO would cite any potentially conflicting trademarks against a later applicant, who would then be obliged to argue that no conflict existed, lest their application be denied by the UK IPO.

In this way, owners of UK and CTM trademark registrations would be protected from the registration of a conflicting mark in the United Kingdom without having to take any action themselves. This is about to change.

The Changes to the UK Examination Process

Under the new examination procedures adopted on October 1, 2007, the searching described above is still performed by an examiner, however the results of the search, including the presence of any potential conflict, shall simply be made available to applicants on an advisory basis. Applicants will have the option, based on this advice, to restrict the scope of their goods or services, withdraw their application or proceed with the application. But the UK IPO will no longer refuse the application based on a prior registration.

If the applicant chooses to proceed with the application, the next step in the new process is the notification by UK IPO of the owners of any cited conflicting trademarks, so that the prior registrants will have the opportunity to oppose the new application. Where any cited marks are UK national trademarks, the owners will be automatically notified free of charge. However, where a cited mark is a Community Trade Mark, the owner shall only be notified if they have availed themselves to an "opt-in" process that requires a filing with the UK IPO as well the payment of a statutory fee of £50 per mark (additional attorneys’ fees charged by local counsel may also apply). The filing shall be valid for a period of three years, after which time a new filing will be required.

For UK national registrants, the notice will be sent to the address appearing on the registration. For CTM owners who have opted in, a notification will be sent to any address chosen in the opt-in filing.

Should a notification be received, a trademark owner then has the option to file a formal opposition against the pending application in order to protect its rights against such application.

Practical Effects of the Rule Change

The foregoing changes will have a noticeable effect on the rights of those owning both UK and CTM registrations. First and foremost, the new procedure shifts the burden of preventing the registration of conflicting marks from the UK IPO to the trademark owner. Because of the cost of prosecuting an opposition proceeding, this has the effect of imposing on registrants significant costs for protecting their marks which they previously would not have borne in all cases.

CTM registrants in particular are placed at a further disadvantage by the new system because they will not be notified of potentially conflicting marks unless they timely opt in to the system. Experts have already warned that a slew of opportunistic applicants are likely to file applications in the United Kingdom in an attempt to sneak under the radar of those CTM owners who do not immediately file for the "opt-in" process available to them. Given the critical importance of the United Kingdom to most companies trading within the European Union, these activities could create significant headaches for CTM owners who believe that their registrations are still being carefully guarded by the UK IPO.

In an attempt to curtail such practices, the UK IPO has announced that a sunrise period of three weeks after October 1, 2007 is available to those wishing to take advantage of the opt-in process for CTM owners. Those who file within that period will be sent notifications relating to any trademark application examined after the October 1 rule change.


CTM holders should seriously consider taking advantage of the opt-in process made available by the UK IPO prior to the end of the sunrise period, or as soon as possible thereafter. Even for those who have subscribed to trademark watch services that would cover UK trademark applications, the opt-in process is still recommended by legal experts in the European Union, since the notifications to be sent by the UK IPO are likely to be highly targeted and of elevated relevance as compared to most of the notifications coming from watch service subscriptions, which are typically very broad in their coverage.

CTM owners who do not already have professional watch programs in place for their important marks should also consider subscribing to such a service.

Goodwin Procter LLP is one of the nation’s leading law firms, with a team of 700 attorneys and offices in Boston, Los Angeles, New York, San Diego, San Francisco and Washington, D.C. The firm combines in-depth legal knowledge with practical business experience to deliver innovative solutions to complex legal problems. We provide litigation, corporate law and real estate services to clients ranging from start-up companies to Fortune 500 multinationals, with a focus on matters involving private equity, technology companies, real estate capital markets, financial services, intellectual property and products liability.

This article, which may be considered advertising under the ethical rules of certain jurisdictions, is provided with the understanding that it does not constitute the rendering of legal advice or other professional advice by Goodwin Procter LLP or its attorneys. © 2007 Goodwin Procter LLP. All rights reserved.

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